Ex Parte Graushar et al - Page 4

                Appeal 2006-3001                                                                                  
                Application 10/747,840                                                                            


                       Hill I discloses (col. 4, ll. 45-68) a method of producing verified,                       
                embossed, and encoded credit cards mounted to matched carrier forms.  The                         
                method includes the steps of embossing the face of a credit card,                                 
                magnetically encoding similar information on a magnetic strip on the back                         
                of the card, and inserting the card into a verifiably matched and correctly                       
                printed carrier form.  Nowhere does Hill I mention optical disks or a binding                     
                line.                                                                                             
                       The term "optical disk" is well-defined in the art as a storage disk that                  
                is read or played using a laser.  The term includes CDs, CD-ROMs, laser                           
                disks, DVDs, digital optical disks, and numeric optical disks, as indicated by                    
                Appellants (Reply 2).  Thus, contrary to the Examiner's assertions, the                           
                recitation of "optical disk" in claim 1 is broader than the recitation of a CD,                   
                CD-ROM, and DVD in claim 2 and need not encompass mediums such as                                 
                cards with magnetic stripes, which are known not to be optical disks.  A                          
                credit card which is embossed on one side and has a magnetic strip on the                         
                other side is neither optical nor a disk.  Accordingly, Hill I fails to disclose                  
                writing electronic information to an optical disk.                                                
                       "It is axiomatic that anticipation of a claim under § 102 can be found                     
                only if the prior art reference discloses every element of the claim."  In re                     
                King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986).  See also                          
                Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick, 730                                 
                F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).  Since Hill I lacks a                        
                teaching of an optical disk, Hill I cannot anticipate claims 1, 3, 6, 21, and 22.                 
                       The Examiner (Answer 3) asserts that claims 11, 13, 14, and 22 are                         
                anticipated by Hill II.  Appellants contend (Br. 9) that Hill II, like Hill I, fails              

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